Australian businesses who have registered their trade marks overseas will know that the trade mark registration process differs between jurisdictions. It’s important for owners of international trade marks to be aware of changes to the law in other jurisdictions. The European Union is the latest foreign jurisdiction to implement changes to its law.

EU Regulation 2015/2424 comes into effect on 23 March 2016. The regulation aims to reform some aspects of trade mark law to improve the registration process and reduce application fees. It is the most significant change to European trade mark law since 1996 when the European Union Community trade mark was introduced.

Renaming of the CTM and OHIM

The first of the changes is the introduction of two name changes:

  1. The Office for Harmonisation in the Internal Market (OHIM) will be renamed to the European Union Intellectual Property Office (EUIPO).
  2. The Community Trade Mark (CTM) will be renamed to the European Union Trade Mark (EUTM).

Both these changes improve understanding for trade mark owners both in and outside the EU.

Fees

EU trade mark applicants would be aware that until now, fees were the same for up to three classes of goods and services, with a per-class fee for each additional class. The recent changes mean that both application and renewal fees will be charged on a “per-class” basis, although not quite in the same manner as in the majority of other jurisdictions. New fees for electronic applications are €850 for one class, €50 for a second class, and €150 per class after that.

For the majority of trade mark applicants who apply for protection in one or two classes, fees will decrease or remain the same.

Old Fees New Fees
One class €900 €850
Two classes €900 €900
Three classes €900 €1050
Four classes €1050 €1200

Specifications

Trade mark owners would be aware that each trade mark is protected in respect of goods and services divided into 45 ‘classes’. Each class is defined by a ‘class heading’, which indicates the types of goods and services that fall within the class. It was previously possible for EU trade marks to include a ‘class heading’ as the specification of goods or services, and thereby obtain protection for all goods or services in that class. This is no longer the case.

The new changes phase out the ‘class heading’ system and require trade marks to state explicitly the goods services for which protection is required.

This change applies to trade marks filed after 22 June 2012, so it is important for EU trade mark owners to check whether they need to modify the specification of goods and services claimed.

Graphical Representation

Previously, EU law required that a trade mark be capable of being represented graphically. The new changes remove this requirement, instead requiring that a trade mark be represented in a manner that is not necessarily graphic, but “clear, precise, self-contained, easily accessible, intelligible, durable, and objective.”

Procedural Changes

Priority Claims: Applicants will now need to claim priority at the time of submitting their application.

Search Reports: Receiving a report on potentially conflicting trade marks will now be optional.

Publication: Publication of the EUTM will now occur immediately after issuance of the search report.

Opposition: The 3-month trade mark opposition period will now commence one month after publication of international trade mark registrations designating the EU.

Key Takeaways

The regulation comes into effect on 23 March 2016. The changes are an overall improvement for trade mark owners, and should make the process of registration cheaper (in some cases), shorter in duration, and easier to complete. In most cases, no action is required by trade mark owners, however if a trade mark owner has concerns about whether their specification of goods requires amendment, they should speak with a trade mark lawyer as soon as possible. Questions? Let us know. 

Daniel Smith

Next Steps

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